<b>Decision of Note</b> 'Jersey Boys' Case Focuses On Licensing of Underlying Rights

The safest approach to obtaining exclusive rights for uses of a copyrighted work is to procure those rights from all of the copyright's owners. Then how “exclusive” is a license that is obtained from one joint owner of a copyright? Litigation in Nevada federal court involving rights on which the highly successful musical Jersey Boys was allegedly based deals with this very question.

The story underlying the legal case began when Rex Woodard, an attorney and ardent fan of the Four Seasons vocal group, entered into a written agreement with Thomas DeVito, an original Four Seasons member, to write DeVito's autobiography and to equally split income from the work. The 1988 agreement stipulated: “You [DeVito] and I [Woodard] will be shown as co-authors, with you receiving first billing. I will do all of the actual writing, but you will have absolute and exclusive control over the final text of this book.”

The DeVito autobiography was completed but never published. Woodard died in 1991. In 2005, DeVito's lawyer told Woodard's sister, Cindy Ceen, that DeVito believed the autobiography still couldn't be sold, though Jersey Boys debuted on Broadway several days later. Donna Corbello, Woodard's widow, filed suit for copyright infringement and for an accounting, alleging Jersey Boys was a derivative work of the DeVito/Woodard book. Then, in Frankie Valli's 2008 divorce proceeding, a years-old agreement became public under which DeVito had granted Valli and Bob Gaudio, two other original Four Seasons members, the exclusive rights in DeVito's “creative contributions, biographies, events in [Devito's] life, names and likenesses (the 'Materials')” in order to develop a Four Seasons musical. Valli and Gaudio licensed the rights they obtained to Marshall Brickman and Rick Elice, who wrote the Jersey Boys musical.

Corbello's suit names DeVito, Valli, Gaudio, Brickman, Elice show producer Dodger Theatricals Ltd., and others as defendants. The complaint includes a cause of action seeking a declaratory ruling that DeVito on his own couldn't issue an exclusive license in his autobiography to Valli and Gaudio. Corbello v. DeVito, 2:08-cv-00 867 (D.Nev.).

Joint Work

In a recent ruling in the case, District Judge Robert C. Jones first considered whether the DeVito autobiography had been a joint work between Woodard and DeVito. On this, Judge Jones noted: “If all DeVito did was contribute non-copyrightable historical facts, and Woodard supplied the entire quantum of copyrightable, creative material, it may be the case that DeVito is not a coauthor of the Work at all. If the Work were Woodard's alone under the law of copyright, the Letter Agreement [between Woodard and DeVito] would still constitute an assignment of 50% of Woodard's rights to receive profits from the Work, i.e., a partial assignment of royalties, but it would not appear to constitute a partial transfer of copyright.” Judge Jones then found that it “appears that the Work was in fact a joint work because of DeVito's non- de minimis creative edits” in reviewing Woodard's manuscript.

Selectively Exclusive License

The district judge went on to consider the effect of the license that DeVito had granted to Valli and Gaudio. Here, the court observed: “A joint owner of a work may consistent with Sybersound grant a license that is exclusive as against him, i.e., he may no longer exploit or further license the work. But such a licensee cannot prevent the other joint owner(s) from using or further licensing the work.” (Sybersound Records Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), involved songs used by the plaintiff's competitors in karaoke recordings.)

Judge Jones then determined: “The Valli/Gaudio License was either a selectively exclusive license [i.e., exclusive against DeVito] or a transfer of DeVito's ownership of the Work, but in no case was it an exclusive license as against Plaintiff.” (Judge Jones said that by using “selectively exclusive license” he was “perhaps coining a new term here” but not a new doctrine.)

The DeVito/Valli-Gaudio agreement stated in part: “[Y]ou grant to us the exclusive right to use and incorporate the Materials in one or more theatrical productions, and any and all ancillary and subsidiary exploitations thereof including, without limitation, cast albums, motion picture and televised versions, merchandise and/or other works. ' You hereby consent to any such use and agree that the Works may be exploited throughout the world in all media now existing and later devised ' .”

Judge Jones noted that these two sentences “indicate an attempt to grant an exclusive license.” But the district judge went on to find that the following two sentences in the DeVito/Valli-Gaudio agreement “complicate the analysis” because they “indicate that the license becomes perpetual” and that “the rights are irrevocable.” However, the court then emphasized that the DeVito/Woodard “Work is nowhere identified except insofar as it is included under the umbrella of 'biographies.'” In addition, apparently neither Valli nor Gaudio were aware of the DeVito/Woodard manuscript when they entered into their deal with DeVito. Judge Jones thus decided there was no clear intent for DeVito to transfer his copyright interest.

The district judge concluded:

“[T]he definition of the Materials in the Valli/Gaudio License includes 'biographies,' and it is therefore broad enough to include the Work under its broad grant of a license. The fact that Valli and Gaudio were not specifically aware of the Work ' an important piece of parol evidence as to the intent to transfer copyright ' is not relevant to whether the Valli/Gaudio License encompassed the Work for the purposes of licensing. The license was purposely written in broad terms and was meant to encompass any and all of DeVito's writings concerning certain portions of his life. The license to exploit the Work, however, must be nonexclusive as against Plaintiff, because DeVito was not its sole owner. Finally, ' Valli and Gaudio were able to further assign the license because of DeVito's explicit permission to do so.”

(Judge Jones also determined that DeVito owed Donna Corbello an equitable accounting of “her ratable share of profits from his licensing of the Work to Valli and Gaudio,” but denied her bid for summary judgment on this cause of action by noting: “There remains a question of fact [as to] what percentage of DeVito's royalties under the license is attributable to the Work and what percentage is attributable to other works or assistance DeVito provided under the license.”)

Conclusion

The district court's decision highlights the complexity of determining what may or may not be an exclusive or a non-exclusive license, and the reach of each. And though Judge Jones didn't squarely address it, if the court had found that DeVito transferred his copyright interest in the autobiography manuscript, Corbello, as Woodard's heir, may have found herself barred from suing Valli and Gaudio, given that copyright co-owners can't sue each other for infringement.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.

The safest approach to obtaining exclusive rights for uses of a copyrighted work is to procure those rights from all of the copyright's owners. Then how “exclusive” is a license that is obtained from one joint owner of a copyright? Litigation in Nevada federal court involving rights on which the highly successful musical Jersey Boys was allegedly based deals with this very question.

The story underlying the legal case began when Rex Woodard, an attorney and ardent fan of the Four Seasons vocal group, entered into a written agreement with Thomas DeVito, an original Four Seasons member, to write DeVito's autobiography and to equally split income from the work. The 1988 agreement stipulated: “You [DeVito] and I [Woodard] will be shown as co-authors, with you receiving first billing. I will do all of the actual writing, but you will have absolute and exclusive control over the final text of this book.”

The DeVito autobiography was completed but never published. Woodard died in 1991. In 2005, DeVito's lawyer told Woodard's sister, Cindy Ceen, that DeVito believed the autobiography still couldn't be sold, though Jersey Boys debuted on Broadway several days later. Donna Corbello, Woodard's widow, filed suit for copyright infringement and for an accounting, alleging Jersey Boys was a derivative work of the DeVito/Woodard book. Then, in Frankie Valli's 2008 divorce proceeding, a years-old agreement became public under which DeVito had granted Valli and Bob Gaudio, two other original Four Seasons members, the exclusive rights in DeVito's “creative contributions, biographies, events in [Devito's] life, names and likenesses (the 'Materials')” in order to develop a Four Seasons musical. Valli and Gaudio licensed the rights they obtained to Marshall Brickman and Rick Elice, who wrote the Jersey Boys musical.

Corbello's suit names DeVito, Valli, Gaudio, Brickman, Elice show producer Dodger Theatricals Ltd., and others as defendants. The complaint includes a cause of action seeking a declaratory ruling that DeVito on his own couldn't issue an exclusive license in his autobiography to Valli and Gaudio. Corbello v. DeVito, 2:08-cv-00 867 (D.Nev.).

Joint Work

In a recent ruling in the case, District Judge Robert C. Jones first considered whether the DeVito autobiography had been a joint work between Woodard and DeVito. On this, Judge Jones noted: “If all DeVito did was contribute non-copyrightable historical facts, and Woodard supplied the entire quantum of copyrightable, creative material, it may be the case that DeVito is not a coauthor of the Work at all. If the Work were Woodard's alone under the law of copyright, the Letter Agreement [between Woodard and DeVito] would still constitute an assignment of 50% of Woodard's rights to receive profits from the Work, i.e., a partial assignment of royalties, but it would not appear to constitute a partial transfer of copyright.” Judge Jones then found that it “appears that the Work was in fact a joint work because of DeVito's non- de minimis creative edits” in reviewing Woodard's manuscript.

Selectively Exclusive License

The district judge went on to consider the effect of the license that DeVito had granted to Valli and Gaudio. Here, the court observed: “A joint owner of a work may consistent with Sybersound grant a license that is exclusive as against him, i.e., he may no longer exploit or further license the work. But such a licensee cannot prevent the other joint owner(s) from using or further licensing the work.” ( Sybersound Records Inc. v. UAV Corp. , 517 F.3d 1137 (9th Cir. 2008), involved songs used by the plaintiff's competitors in karaoke recordings.)

Judge Jones then determined: “The Valli/Gaudio License was either a selectively exclusive license [i.e., exclusive against DeVito] or a transfer of DeVito's ownership of the Work, but in no case was it an exclusive license as against Plaintiff.” (Judge Jones said that by using “selectively exclusive license” he was “perhaps coining a new term here” but not a new doctrine.)

The DeVito/Valli-Gaudio agreement stated in part: “[Y]ou grant to us the exclusive right to use and incorporate the Materials in one or more theatrical productions, and any and all ancillary and subsidiary exploitations thereof including, without limitation, cast albums, motion picture and televised versions, merchandise and/or other works. ' You hereby consent to any such use and agree that the Works may be exploited throughout the world in all media now existing and later devised ' .”

Judge Jones noted that these two sentences “indicate an attempt to grant an exclusive license.” But the district judge went on to find that the following two sentences in the DeVito/Valli-Gaudio agreement “complicate the analysis” because they “indicate that the license becomes perpetual” and that “the rights are irrevocable.” However, the court then emphasized that the DeVito/Woodard “Work is nowhere identified except insofar as it is included under the umbrella of 'biographies.'” In addition, apparently neither Valli nor Gaudio were aware of the DeVito/Woodard manuscript when they entered into their deal with DeVito. Judge Jones thus decided there was no clear intent for DeVito to transfer his copyright interest.

The district judge concluded:

“[T]he definition of the Materials in the Valli/Gaudio License includes 'biographies,' and it is therefore broad enough to include the Work under its broad grant of a license. The fact that Valli and Gaudio were not specifically aware of the Work ' an important piece of parol evidence as to the intent to transfer copyright ' is not relevant to whether the Valli/Gaudio License encompassed the Work for the purposes of licensing. The license was purposely written in broad terms and was meant to encompass any and all of DeVito's writings concerning certain portions of his life. The license to exploit the Work, however, must be nonexclusive as against Plaintiff, because DeVito was not its sole owner. Finally, ' Valli and Gaudio were able to further assign the license because of DeVito's explicit permission to do so.”

(Judge Jones also determined that DeVito owed Donna Corbello an equitable accounting of “her ratable share of profits from his licensing of the Work to Valli and Gaudio,” but denied her bid for summary judgment on this cause of action by noting: “There remains a question of fact [as to] what percentage of DeVito's royalties under the license is attributable to the Work and what percentage is attributable to other works or assistance DeVito provided under the license.”)

Conclusion

The district court's decision highlights the complexity of determining what may or may not be an exclusive or a non-exclusive license, and the reach of each. And though Judge Jones didn't squarely address it, if the court had found that DeVito transferred his copyright interest in the autobiography manuscript, Corbello, as Woodard's heir, may have found herself barred from suing Valli and Gaudio, given that copyright co-owners can't sue each other for infringement.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.